U.S. Trademarks Employing Foreign Terms

When a client wishes to use a foreign term as a trademark in the U.S., an advising attorney should consider, not only, for instance, the sight and sound [1] of the proposed trademark, but also its English meaning as would be perceived by U.S. consumers conversant in the foreign language in question. The meaning of the proposed trademark is considered under the so-called doctrine of foreign equivalents, wherein foreign words, at least from non-obscure languages, [2] are translated into their English equivalents and evaluated according to customary trademark standards. [3]

To illustrate the doctrine of foreign equivalents, this article presents examples of foreign terms in key trademarks contexts, such as determining whether a mark is invalid as generically describing the goods or services sought to be trademarked, or is invalid for creating a likelihood of confusion with an existing English-language mark for similar goods or services. For the most part, the trademark examples discussed either relate to commonplace goods or services, or are well-known or famous, to facilitate understanding.

An English-language term, such as “WINE”, cannot be exclusively appropriated by a merchant in the U.S. as a trademark; otherwise the merchant would be given an unfair monopoly over a generic term that all competitors should be free to use. [4] This principle extends to foreign terms whose English meaning would be perceived by U.S. consumers who are conversant in the foreign language in question as generically defining goods or services. Thus, the Polish-language term “VINKA” for wine cannot be exclusively appropriated by a merchant for use as a trademark; competitors should be free to also refer to their wines as “VINKA.” [5] The practice of considering the English meaning of a foreign-language mark is well-established in U.S. law under the above-mentioned doctrine of foreign equivalents, as shown by the cases discussed herein.

The foregoing term VINKA, and examples of other foreign terms that have been refused trademark protection, are noted in the following table:

An English language term such as “TASTY” for food merely describes a quality or feature of food. Under U.S. law, all competitors should be free to use such a descriptive term “tasty” for food they sell. Thus, the Italian-language mark “SAPORITO,” which in English means “tasty,” merely describes a quality or feature of sausage, and cannot be trademarked for sausage. [9] The foregoing term SAPORITO and samples of other foreign terms that have been refused trademark protection are noted in the following table:

In somewhat rare circumstances, an otherwise descriptive, foreign-language mark can be protected in the U.S. This may occur where, through such means as extensive advertising and use of the mark, consumers come to view the mark as indicating that the trademarked goods or services originate only from the owner of the mark. Such a source-identifying meaning of a mark, created through extensive advertising and use, for instance, is known as “secondary” meaning. Thus, although the mark “VOLKSWAGEN”, meaning “peoples’ car” in German, was held descriptive of a low-priced popular car, it was nonetheless protected since it had acquired a source-identifying, or secondary, meaning to consumers. [14] This is noted in the following table:

“Fanciful” marks have a meaning so wholly unrelated to the trademarked goods or services that a consumer would fail to find it descriptive of such goods or services. Fanciful marks, accordingly, are stronger, and easier to protect, than marks merely describing a quality of the trademarked goods or services. This principle applies, not only to English-language marks, but foreign-language marks as well. This is illustrated by the foreign-language mark “GIOIA”, meaning “joy” in Italian, for pasta and related non-beverage retail food products. The meaning of the work “joy” is quite unrelated to the trademarked pasta and related food products. A federal district court refused to find that the GIOIA mark was descriptive-in effect finding it fanciful-, and enjoined another merchant from using the mark GIOIA for wines. [16] The foregoing and other fanciful marks that were held valid are noted in the following table:

Although Courts never allow registration of generic marks, they may allow registration of a generic English noun in combination with a foreign article (e.g., “la”, French for “the”). This is based on the principle that such an incongruous combination gives the mark a fanciful flavor, thus rendering it registrable.

A good illustration is found in the term LA YOGURT, which the U.S. Trademark Office Trial and Appeal Board (“the Board”) allowed to register. “Yogurt” is a generic English noun, and was held by the Board to differ from the French generic term for yogurt, which is spelled differently (e.g. “yogourt”). Such English term, coupled with the French article “la”, became unique enough to be perceived by the general public as a distinctive commercial term, and therefore registrable. The Board also determined that such registration did not infringe on competitors’ rights, since they are not restricted from using the generic term “yogurt” without the French article. [20] For most “Article + Noun” terms registered by the U.S. Trademark office see the following table:

Combination of
English and French create a distinguishing commercial impression

Note, in contrast, the term LE SORBET, which was denied registration because too generic. [23] “Le sorbet” is also the correct generic french term and article, and as such does not enjoy the privileges given to an English noun, coupled with an incorrect French article. Further examples of “Article + Noun” terms that were refused registration by the U.S. Trademark Office are noted in the table below:

The attorney should be warned, however, that while the law relating to a foreign article + English noun mark is clear, factual issues may not be. For instance, the dissenting opinion of the U.S. Trademark Trial and Appeal Board (“Board”) in the “LA YOGURT” case, discussed above stated, among other things, that there were many types of spelling of the word “yogurt” that were identical in both English and French. This gave the Board the power to decide that any spelling of “yogurt” could be considered generic, regardless of the correctness of the article placed before it, [27] It is therefore very important that any foreign article + English noun combination be as fanciful as possible.

V. Avoid Terms Whose English Meaning Would Likely Be Confused With an Existing English-Language Mark for Similar Goods or Services

A foreign term whose English translation would likely be confused with an English-language mark for similar goods or services will be rejected by the courts as invalid. Thus, registration of the Spanish-language mark EL SOL for footwear, T-shirts, pants, shorts, and tops was denied under the doctrine of foreign equivalents, the mark being held confusingly similar to the English-language trademark SUN, employed for footwear. [28]

The foregoing, and other, foreign-language marks deemed invalid because their English meanings would likely be confused with existing English-language marks for similar goods or services are noted below:

Avoid Terms Whose English Meaning Would Likely Be Confused with an Existing English-Language Mark for Similar Goods or Services:

The owner of a foreign-language trademark which is at risk of being considered generic or merely descriptive has some options available. The owner can sometimes successfully retain rights in the mark by showing that its English meaning fails to clearly embrace a generic or descriptive term. Thus, the owner of the Spanish-language trademark “LA POSADA,” for lodging and restaurant services, was able to register such mark, even though “POSADA” translates as a lodging-house, inn, small hotel or lodging, [33] and “LA POSADA,” as “the inn.” The owner, however, was able to show that “POSADA” has the alternative meaning of a person’s home or dwelling. Since “LA POSADA,” thus, “has a connotative flavor [or meaning] which is slightly different from that of the words ‘the inn’ “, [34] registration was allowed.

Another option available to a trademark owner whose foreign-language mark is at risk of being considered generic or merely descriptive is to alter the spelling of the mark so that it would not be recognized as generic or descriptive by those conversant in the language in question. The alteration, however, must be quite substantial. Hence, insufficient alteration was found in the trademark “AIROMATIQUE”, for toilet water (e.g. cologne). Such mark was held to be the mere misspelling (or phonetic equivalent) of the French term “AROMATIQUE”, whose English equivalent, “AROMATIC,” means fragrant or spicy. [35] As such, the mark “AIROMATIQUE” was considered merely descriptive of toilet water, despite the trademark owner’s counter-argument that the mark “AIROMATIQUE” suggests, instead, the method of dispensing the toilet water as automatically by air (i.e. a spray). [36]

Conclusion

An attorney evaluating the validity of a U.S. trademark that uses a foreign-language term should be cognizant of the doctrine of foreign equivalents. Under the doctrine, foreign terms are translated into their English equivalents, and then evaluated in regard to customary trademark standards. Thus, to be valid, the English equivalent of a foreign-language mark should not generically define the trademarked goods or services, or be merely descriptive of such goods or services. Additionally, to be valid, an English-language equivalent of a foreign term should not create a likelihood of confusion with an existing English-language mark for similar goods or services.